In the oral argument of In re LG Electronics, Inc., App. No. 2011-1248 (Fed. Cir. 2012), the Associate Solicitor for the USPTO argued that a purportedly limiting statement in the specification of the Applicant’s patent under reexamination should not be considered a clear disavowal. One argument that the Associate Solicitor relied upon was that there could be no clear disavowal when the boilerplate of the same specification called for the claims not to be limited by the disclosed embodiments.
In what sounded like a tongue-in-cheek comment to me, Judge Newman remarked:
Well, that’s very interesting. We’ve seen that identical boilerplate in probably six or seven million patents. And, now you’re telling us that for the first time we should … apply it.
You can listen to Judge Newman’s remark here: [Listen].
You can listen to the entire oral argument here: [Listen].
You can review the Rule 36 opinion here: [Read].